DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed 06/27/2025 have been fully considered but they are not persuasive. The Applicant has argued that the Examiner’s assertion that the content by weight of the inorganic oxide particles in the protection layer taught by Amamiya as set forth in the prior Office Action will not correspond to the volume percentage range recited in instant claims. The Applicant has demonstrated in the Response that the inventive examples 1-4 of Amamiya correspond to volume percentages of the inorganic oxide of 13.6 to 15.2 vol%. However, Amamiya further teaches that the inorganic particles are present in the protective layer in an amount up to 90% by weight. The calculations shown by the Applicant represent 50% by weight. Performing the same calculation with an amount of inorganic oxide of 9 parts to 0.75 parts resin and 0.25 parts initiator (which corresponds to 90% by weight of inorganic oxid particles in the protective layer) gives a volume percentage of 58.60 vol%. According to the MPEP, patents are relevant as prior art for all they contain, “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). The MPEP also instructs that, “A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989).” (See MPEP 2123 II).
In the instant case, Amemiya teaches a workable range of up to 90% by weight of the inorganic oxide in the protective layer. While the inventive examples taught by Amemiya are lower than the upper end of the workable range Amemiya is valid as a reference for all that it teaches. Therefore, the disclosure of Amemiya encompasses the Applicant’s claimed range of content of the inorganic oxide particles based by volume. As such, the Applicant’s arguments are not found to be persuasive in overcoming the disclosure of Amemiya.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2 and 6-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by EP 0645682 (henceforth EP ‘682).
EP ‘682 teaches a photoconductor comprising an electroconductive support, a photosensitive layer and a surface layer. The surface layer is taught to comprise a resin and conductive particles (p. 4 ln. 34-35). The conductivity of the surface layer is taught to be from 1010 Ωcm to 1014 Ωcm (p. 4 ln. 28-33). Additionally, the conductive particles are taught to include inorganic oxides (such as titanium oxide and tin oxide) and are further taught to be present in an amount of 10 to 90% by weight of the surface layer (p. 4 ln. 36-47). This range is understood to encompass the Applicant’s recited volume percentage range of 40 to 70 volume percent. In embodiments (Example 1), EP ‘682 teaches that the surface layer is formed from the same acrylic resin monomer taught by the Applicant in the inventive examples of the instant specification (see the acrylic resin monomer of EP ‘682 on p. 6 ln. 15-25 and Formula (0-1) in [0096] of the instant specification). Additionally, the surface layer in EP ‘682 is taught to comprise 50% by weight of tin oxide as a conductive particle and have a volume resistivity of 1012 Ωcm (p. 6 ln. 15-31). Examples 25 and 26 of the instant specification also comprise tin oxide particles as the conductive particles as well as a binder resin having formula (0-1) and possess a charge retainability value within the range recited in pending claim 2 (see Table 2 on page 41 of the instant specification). As such, the surface layer of Example 1 of EP ‘682 would be expected to inherently possess a charge retainability of 9.5 or more, as recited by the Applicant in pending claim 2. EP ‘682 further teaches a process cartridge and image forming apparatus comprising the photoconductor described above as well as the additional components recited by the Applicant in pending claims 7-8 (p. 3 ln. 31- p. 4 ln. 16 as well as claims 13-36 of EP ‘682).
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER L VAJDA whose telephone number is (571)272-7150. The examiner can normally be reached 7:30-4:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Huff can be reached at (571)272-1385. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/PETER L VAJDA/Primary Examiner, Art Unit 1737 10/08/2025